Trade Dress Registration: It’s not a word or logo
Apple has created trade dress intellectual property and obtained a trade dress registration for more than its Apple trademark – the bitten apple. It also has a registered trademark, a trade dress registration for its Apple Store Design. Most new companies begin to protect intellectual property when they file to register a name and logo. These trademarks are a way in which the public recognizes a particular product and the company that sells it. However, trade dress registrations are another type of registered trademark. Let’s look at some other trade dress examples that are also registered trademarks.
Registered trademarks can also be secured for trade dress intellectual property. Securing a trade dress registration should not be overlooked by new brands, especially when your product or service introduces a distinct look and feel to the product design. Whether you wish to trademark a name or logo, or secure trade dress registration, do use the Brandaide 3-Step Trademark Registration Process SELECT | SECURE | SUSTAIN. Learn More.
In legal circles, the commonly accepted definition of trade dress is: “The total appearance and image of a product, including features such as size, texture, shape, color or color combinations, graphics, and even particular advertising and marketing techniques used to promote its sale.”
Trade dress examples include the store designs, the shape of a classic automobile, a magazine cover design, the “G” shape of the frame of a GUCCI watch, the appearance of a video game console, a fish-shaped cracker, just to name a few. Trademark registration and protection for these oddities are trade dress intellectual property. My favorites are the layout and appearance of a Mexican restaurant, and the look of a musical group on stage! I’ve even registered the appearance of a towel for yoga matsI
Trade dress is the composite tapestry of visual effects.
Trade dress intellectual property is best recognized by trade dress examples
As the saying goes, a picture is worth a thousand words. So, here are some pictures. Can you recognize what’s protected in these photos? Note, one of the four is not protected at all since the court ruled the claimed trade dress was functional. Can you guess which one? The answers are provided below.
Trade Dress Registration
To register your trade dress, it must be distinctive, and the elements must be capable of being identified and defined in order for the public to exactly know the rights that are being claimed. The Trademark Office requires that the claimed trade dress be “inherently distinctive.” Even if registered, when it comes time to sue over infringement, there’s one big defense namely that the claimed trade dress is “functional.” In general terms, a product feature is functional if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Inwood Labs. Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982).
Let’s start with the product above whose appearance was recently held functional, meaning it can not become a trade dress registration.
Hint: Anyone have an iPhone? Apple may have succeeded in protecting its store design but it hasn’t fared so well with the product configuration of the iPhone. In 2015, Apple lost an appeal to the Federal Circuit in its lawsuit against Samsung over the appearance, including the shape of the iPhone. (Apple won a huge verdict for claims of patent infringement in the same case). Apple Inc. v. Samsung Electronics Co., Ltd., 786 F.3d 983 (Fed Cir. 2015).
Why? A trade dress registration does not cover functionality. As a result, the configuration of a product is more difficult to protect.
There are four factors that the Ninth Circuit uses to analyze functionality: “(1) whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether the particular design results from a comparatively simple or inexpensive method of manufacture.” Disc Golf Ass’n v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir.1998). Further, when it comes to product configuration, there can be no registration unless the applicant can submit evidence that the configuration has acquired secondary meaning, i.e. that the configuration of the product is recognized by the public and associates it as a brand. Trademark Manual of Examining Procedure 1202.02(b)(i)
A trade dress, taken as a whole, is functional if it is “in its particular shape because it works better in this shape.”
A product feature need only have utilitarian advantage to be considered functional.
What’s Covered by the Trade Dress Registration in these Trade Dress Examples?
Adidas’ 3 stripes on the side of their shoes are non-functional. They adorn every pair of shoes and are highly protected as a trademark.
The Lifesaver Hole. A candy doesn’t need to have a hole, so the hole in the Lifesaver is not functional! It’s highly recognized by the public. So when it comes to candy, “no holes allowed.”
The Christian Louboutin Red Sole. Just the red sole alone is not distinctive. However, the red shoe sole in combination with a different color shoe is. See those red soles on a black stiletto. That’s a strong trademark.
When building your brand, think outside the proverbial box. There may well be a strong element of your product or service that is highly protectable besides a word or logo. A trade dress registration can become a registered trademark if it is non-functional, and relates to the distinctive packaging or appearance of the product or service, just like the Apple trade dress registration.